Beginning with the return of Steve Jobs in 1997, Apple began its comeback with the introduction of new products. Some of its most successful products have been in the “i” line, including the iMac, iPod, iPad, iPhone, and iTunes. When it introduced the Apple Watch, many consumers wondered why it was not named the iWatch for consistency with the company’s product line. Apple was unable to name the Apple Watch the iWatch because of trademark issues in multiple countries, including the U.S., UK, Switzerland, and China.
After Steve Jobs took over the helm of Apple in 1997, he worked to rebuild the company. Apple had struggled during the early 1990s and was at risk of failing when Jobs returned. The company started with its release of the iMac in 1998. The iMac, along with Jobs, is credited with saving Apple. Ken Segall, a man who worked for Apple’s advertising agency, came up with the name. Following the success of the iMac, Apple continued using other names beginning with a lowercase i for multiple products.
In 1999, Apple released the first iBook, which was a consumer-friendly laptop that allowed people to connect to the internet wirelessly. 2001 saw the release of the iPod, a portable digital music player that allowed people to store thousands of songs. The early 2000s also witnessed the creation of Apple’s “i” web services, including iReview, iTool, and iTunes. In 2007, Apple revolutionized phone technology with the release of the first iPhone. The iPhone firmly cemented the company’s place as one of the most powerful tech giants in the world.
When Apple was working on developing its smartwatch, it ran into trouble because iWatch had been trademarked by numerous companies in multiple countries. Its inability to trademark the name iWatch is illustrative of the problems that large, global companies can face when they sell their products around the world.
Enter OMG Electronics
OMG Electronics was a company based in Fresno, California. It applied for a trademark for the iWatch name in Aug. 2012. The company apparently intended to create a smartwatch and indicated that it was raising funds to for the purpose of creating a combined mobile device and watch. OMG had a crowdfunding campaign to try to raise funds from September to October 2012. Its campaign was a failure, and OMG Electronics was only able to raise $1,434. Despite the failure of its campaign, OMG Electronics applied for its trademark first before Apple could. A company in New York had applied for the iWatch trademark in 2007, but Swiss watchmaker Swatch was able to successfully challenge that company’s trademark application.
Beyond the US
Apple had additional trademark problems beyond the U.S. When it applied for a trademark for the iWatch name in the U.K., Swatch quickly objected to it, leading to trademark litigation. A company named Probendi Limited that is based in Dublin, Ireland has held the trademark for iWatch since 2008 in the European Union. Its website contained a prominent message claiming that it was the only entity allowed to use the term iWatch in the European Union.
In China, nine different companies have held the iWatch trademark. While many of those trademarks are no longer valid, some remain. Another company in China has also trademarked the similar-sounding iWatching. Apple was able to secure the iWatch trademark in several countries, including Mexico, Japan, Taiwan, and Russia. However, since several companies in the U.S., U.K., E.U., and China held their own iWatch trademarks, Apple was unable to secure its trademarks in large portions of the world.
iSwatch vs iWatch
Apple filed for a trademark for iWatch in the U.K., and Swatch, a Swiss watchmaker, promptly filed an objection to it for its iSwatch and Swatch products. Swatch argued that it had an earlier trademark for iSwatch that included similar products to the proposed smartwatch. Swatch argued that allowing Apple to register its trademark in the U.K. would cause confusion. The Intellectual Property Office of the U.K. ruled in Swatch’s favor in Oct. 2014.
The hearing officer found that the mark iWatch contained a high degree of similarity between watches and computer hardware, peripherals, computers, and communication devices. He also found that there was a medium amount of similarity between watches and cameras, videos, radios, and audio devices since they could be used in watches. This meant that Apple would only be allowed to use the iWatch trademark in the U.K. for software, computer peripherals, and security devices. Apple appealed the decision to the High Court.
In the High Court, John Baldwin disagreed with the initial hearing officer’s ruling. He instead found that there was a low degree of similarity between the Apple Watch and Swatch’s products. He stated that just because a device might be able to tell time did not mean that a company should be unable to register a trademark for a communication device. Since this was the basis for the IPO hearing officer’s decision, Apple was successful in its appeal. However, when the smartwatch was released in 2015, it was named the Apple Watch instead of the iWatch.
The trademark battle between Swatch and Apple over the iWatch was not the only one between the companies. In 2017, Apple filed an objection to Swatch’s use of its Tick Different campaign in Switzerland. Apple argued that the slogan referenced its own Think Different slogan that it used during the 1990s. On April 2, 2019, the Federal Administrative Court in Switzerland ruled in Swatch’s favor. In order to prove that a slogan is too similar to one that was used by another company, the objecting party has to show that it would cause confusion in at least 50% of the consumers. The Swiss court found that most people in Switzerland were unfamiliar with Apple’s Think Different campaign of the 1990s and that Apple had not used the slogan in its marketing materials since 2002.
Importance of trademarks
Trademarks prevent other companies from using similar marks for the same product categories in the same country. As Apple’s problems with securing the iWatch trademark show, it is important for companies to secure their trademarks as early in the process as possible. While it is unclear if Apple ever truly intended to use the iWatch name for its smartwatches, the company ended up breaking with its long history of using “i”n names for its products when it released the Apple Watch in 2015.
When companies file to register their marks with the U.S. Patent and Trademark Office or with similar offices in other nations, they do so according to different classes of goods. To successfully register a trademark for a product or service, it is important for companies to research their intended mark to identify any registered trademarks that are too similar to theirs. Making certain that a trademark is not too similar before filing a trademark application can reduce the chances that an objection to the mark will be raised. This can help companies to avoid litigation over their marks and can help them to prevent their brands.